Trade mark owners beware! New change in law places onus on you

Stephan Weber of Sykes Anderson LLP discusses the impact of recent changes to the trade marks application procedure.

From 1 October 2007 the UK Intellectual Property Office (“IPO”) will change its examination procedure for trade marks applications.  While this will affect all future trade mark applicants, the changes will hit existing rights holders hardest.  Now is the time to take the necessary steps to protect your rights!

In future, the IPO will no longer automatically refuse applications where there is an earlier similar mark.  Instead it will be for the holder of the existing trade mark to block the application.  While this is intended to simplify the application procedure, the onus will now be on the existing trade mark owners to actively protect their rights.

The new procedure

Upon receipt of an application the IPO will search the relevant registers and notify the applicant about any potential earlier conflicting marks.  The applicant can then choose either to continue with the application as it is, to restrict the list of goods or services to which the new mark is to apply or to withdraw the application altogether.

If the applicant decides to continue with the application as it is, the IPO will write to you as the owner of the earlier conflicting mark when the application proceeds to publication in the Trade Marks Journal.  You will have three months from the date of publication to lodge a formal opposition to the registration.  If you do not oppose within this period, the new trade mark will be registered.  While failure to oppose will not prevent you from later (within 5 years) applying to have the new trade mark declared invalid, the invalidation process is significantly more expensive than the cost of lodging an opposition. 

The new procedure will mean that you are reliant on the IPO to inform you of any application that may infringe your existing mark.  The IPO will automatically and free of charge notify you if you own an earlier UK trade mark that might be affected.  However, if you own a Community or International Trade Mark you will need to opt in to be notified.  A fee of £50 per mark (for a period of 3 years) will be payable.

What you should do – Practical steps

• If you own a Community or International Trade Mark you must now opt in to receive notification of any later filed conflicting trade mark applications.
• You must ensure that letters from the IPO will be channelled to someone that understands the implications of this correspondence and knows what there is to do.
• You must have procedures in place on how to deal with applications for potentially infringing marks.
• To back up the IPO notification system you might want to consider instructing a specialist watching service over your most important marks.

Please note that this area of the law is a complex subject and you should not take or refrain from taking any step without full legal advice on your particular circumstances. The content of this article is of a general nature and no liability is accepted in connection with it or if any reliance is placed on it.